All Things Pros focuses exclusively on patent prosecution. The blog uses PTAB decisions, and the prosecution history that led to appeal, to discuss good and bad strategies for handling 102, 103, 101 and 112 rejections. Claim construction using Broadest Reasonable Interpretation is also a major focus. And sometimes you'll find prosecution topics such as after-final, RCE, and restriction practice.

Wednesday, December 23, 2015

Takeaway: The Examiner rejected using a Japanese language reference. The rejection specifically referred to a drawing in the reference, but the Examiner did not provide a translation of the text that appeared in the drawing. The Applicant raised this issue several times in prosecution. The Applicant also filed a Petition under § 1.181, requesting the TC Director to compel the Examiner to act. After the fourth request, the Examiner finally provided a translation of the text in the relied-upon drawing. The Applicant later appealed. (Appl. No. 11/474,530 to Arjomand, "Window Refrigerator," available on Public Pair.)

The application was directed to a "refrigerator for home use having its front indoors and its condenser coil outdoors to
save electricity whenever the outdoors is colder than indoors."

In the first Office Action (mail date July 16, 2009), the Examiner rejected the claims as anticipated by patent publication JP 063000416A. A machine translation of the reference specification was included with the Office Action. A few weeks after the Office Action was mailed, the Applicant filed a paper requesting the Examiner to provide a translation of the entire reference. (This scenario is covered by MPEP 710.06 "Situations When Reply Period is Reset or Restarted.") The request explained:

The Examiner provided a machine translation accompanied by a single Figurewhich does not appear to be the one relied on by the Examiner. Applicant could only find the published abstract online. Applicant requests that all figures be supplied and that new a response period be set.

Five weeks after the Office Action mail date, the Examiner had not complied with the Applicant's request, so the Applicant filed a Petition under 1.181. The Petition asserted that it was PTO policy to supply "clear" translations of foreign language references (citing Ex parte Rudd, Appeal 2007-3775). The Applicant requested the Technology Center director to compel the Examiner to take the following actions:

supply the drawings from the cited reference

if the drawings include text in Japanese, supply an English translation of such material

set a new 3-month response period, as of mailing date of the drawings

Five days after the Petition was filed, the Examiner sent a copy of the entire reference – including figures – in Japanese. The Examiner also reset the period for Response, to start from August 31 rather than July 25. The Applicant then filed a paper specifically requesting the Examiner to provide an English translation of foreign-language subject matter found in FIG. 5 (the sole figure relied upon by the Examiner). The Applicant also requested a new 3-month response period.

On Sept. 25, the Examiner sent a "Miscellaneous Action" with this explanation:

The rejection based on the JP patent is solely for teaching "ref/freezer (fig. 5) that has a separate freezer compt (8) and a fridge comp (9) where a damper (18) is disposed adjacent the fridge compartment (fig. 5) and dependent on a reference frame of view, the damper is disposed ... (fig. 5.)"
Therefore no additional English translation of fig. 5 is deemed necessary in view of the computer translation sent earlier. The response period for the outstanding Office Action mailed 8/25/2009 remains UNCHANGED.

The Applicant filed a Response to Office Action a few weeks short of the six month date of the new reply period. The Applicant amended claims but also brought up the issue of the missing translation for the drawings. According to the Applicant, the Examiner's refusal to provide a full translation left the Applicant unable to determine whether the Examiner was impermissibly picking and choosing from the teachings of the reference. (In re Wesslau, 353 F.2d 238, 241 (C.C.P.A. 1965)). This refusal denied the Applicant the "possibility of presenting an
educated response to the Office Action." The Applicant also noted the pending Petition to the TC Director.

The Examiner issued an Office Action, which was Final because of the claim amendments. The Office Action used the same Japanese reference in the rejection, and said nothing about Applicant's renewed request for a translation.

The Applicant filed a After Final Response within the two month date, and once again brought up the Examiner's failure to provide a full translation. This time the Applicant made arguments about the level of skill in the art. The Applicant took the position that the poor translation of the Japanese language reference made it impossible to determine the level of skill in the art. As a result, the third Graham factor had not been resolved and the rejection was deficient.

The Examiner issued an Advisory Action and indicated that he would request a full translation. He nonetheless maintained that it was proper to rely on a translated abstract of a foreign reference. The Examiner also asserted that a POSITA would know that the abstract is accurate. Furthermore, since the abstract was sufficient, the level of skill has been established.

Three weeks after the Advisory Action, the Examiner sent the translated figures. The Applicant filed an RCE with all new claims and thanked the Examiner for supplying the translation. The Applicant appealed after the next Office Action, which used a new primary reference (also Japanese). The original reference remained.

My two cents: I think reasonable minds can differ about whether fighting about a missing translation is a good idea. I do think it's important to try to make some forward progress on the merits of the case, rather than getting stuck solely on the translation issue.

I like the idea of
filing a petition while at the same time continuing raise it with the
Examiner. Here, looks like the Applicant worn the Examiner down before the petition was decided.

I'm generally in favor of appealing early. But failure to provide a translation is a petitionable, not appealable, matter. So appealing early would be a bad idea if you wanted to limit your arguments to failure to provide a full translation. In other words, I think you need to address the Examiner's assertions about the reference, even if you don't have all the information you need to make a great argument.

You could say, as the Applicant did, that the insufficient translation means the Examiner failed to make a Prima Facie case. And, sure, Prima Facie case is certainly something you can raise on appeal. Still, the interaction of these issues – Examiner requirements during prosecution, level of skill, foreign language reference – is complex. So I wouldn't bet my appeal on the Board holding that incomplete English translation means no level of skill means no Prima Facie case.

Finally, the Applicant could have bypassed the Examiner and gotten its own translation. Could be that costs actual money. But maybe not a lot. After all, it was only the Japanese text on the figures themselves that the Applicant was fighting about at the end. The Examiner had already provided the English language text of the entire specification. (After a specific request by the Applicant, that is.)

Takeaway: The Applicant appealed claims to a braking system. The limitation at issue read
"detection of ... rotational engine speed falling below a predetermined minimum." The Examiner relied on this statement in a Japanese reference: "judge whether rotation is beyond a predefined limit." The Applicant argued that the ordinary meaning of "beyond" was more than the limit, where the claim specified "below" the limit. Neither side cited a definition or any other evidence of meaning to a POSITA. The Board summarily agreed with the Applicant, citing to a dictionary definition, and reversed the rejection. (Ex parte Sabelstrom, PTAB 2015.)

The Final Office Action included a copy of Hoshido (in Japanese), along with the corresponding English language abstract.

In the Appeal Brief, the Applicant argued that the Examiner had misinterpreted Hoshido. The Applicant included (in the Evidence Appendix) a machine translation from the JPO, and explained as follows

It appears that [the relied-upon statement in Hoshido] has been construed to correspond to a step of determining that the rotational speed of the engine has fallen below a predetermined value. This is not correct. ...
In paragraph 21 a set of rules, steps 2-5, are defined, which set of rules are used for determining that braking is unnecessary, that is it is determined whether the driving condition is such that no brakes should be applied. ...
In the third condition (4) it is determined whether the engine speed is beyond certain threshold value or not. A normal meaning of beyond is "more than; in excess or over and above"... If the engine is running at low speed, there will be a reason to assume that braking is unnecessary, while if the engine is running a high speed, braking may be assumed to be desired. Thus, "beyond" should be understood to mean that braking is caused to occur when engine speed is above a predetermined value, not below the value.

The Applicant offered this additional context for the teachings of Hoshido:

It should also be noted that the exemplified condition is 900 RPM, a
typical mid-range speed for diesel truck engine. Idling speed would be
around 700 RPM and risk for stall is typically 100 rpm below this. It is
thus clear that the condition tests whether the engine speed is above a
certain threshold value or not.

The Examiner's Answer repeated the same position. The only relevant additional information was this comment on the Applicant's statement about mid-range, idle, and stall speeds: "This explanation is so broad, different type of engine has different range of engine speeds according to manufacture specification."

The Reply Brief included a summary of differences between the claimed invention and the teachings of Hoshido. The Applicant did not further discuss the meaning of "beyond predetermined rotation."

My two cents: One of the few instances in prosecution where the issue really was the teachings of the reference, rather than the meaning of the claims. The Applicant was smart to focus on meaning, though the position would be strengthened by offering evidence rather than a naked assertion.

Notably, it was the Applicant and not the Examiner that provided an English translation of the Japanese language reference. MPEP 706.2(II) that if the Examiner relies on the document itself rather than just the abstract, a translation should be provided.

The Applicant included the translation in the Evidence section of the Appeal Brief. Technically, the Applicant should have submitted this earlier and had the Examiner enter it as evidence. I'm glad to see the Board didn't ding the Applicant on this technicality, especially since the Examiner didn't follow the rules in the first place.

Monday, December 21, 2015

Takeaway: An Applicant appealed claims that described structure in terms of segments with joined endpoints, along with profiles for each segment. The Applicant argued that the Examiner had interpreted geometric features shown in the reference drawings in an arbitrary manner, in order to read on the claims. In making that argument, the Applicant cited to two prior Board decisions involving reference were also at issue. The Board dismissed this portion of the argument because the Applicant didn't compare facts in the cited cases to facts in the case on appeal. (Ex parte Justin, PTAB 2014.)

The Applicant appealed two anticipation rejections of claims to a "punch for cutting tile from a workpiece". The claims recited a cutting blade and further described the structure of the cutting blade in terms of segments with joined endpoints, along with spline profiles for each segment. (See Applicant's Fig. 14, below.)
The Examiner rejected as anticipated by the cutting die in Copeland. The Applicant traversed, arguing that Copeland's die did not have a cutting blade formed by four joinedsegments as required by the claims. The Examiner had added lines to Copeland's figure as axes to identify segments, but those lines "cross the punch shape at intermediate locations" and thus were not joined segments.

Examiner's Annotated Figure from Final Rejection

When the Examiner maintained the rejection, the Applicant appealed. The Appeal Brief argued that the Examiner had used arbitrary segments. In support of this argument, the Applicant cited to language in two ex parte PTAB decisions:

The Examiner's interpretation of the drawings in Copeland and Spengler is unreasonable because he uses arbitrary portions of the drawings that were "defined only by the Examiner" to meet Applicant's claim limitations. Ex parte Denison, Appeal 2009-004110, p. 5 (BPAI 2010) (Exhibit A) ("However, that 'structure' identified by the Examiner results only from an arbitrary delineation of Berry's structure, made in order to meet the claim limitations. Even giving the claims their broadest reasonable interpretation, one of ordinary skill in the art would not have understood the claim terms requiring 'double-curved portions' and 'Y-shaped portions' to include the arbitrary portions of Berry defined only by the Examiner"); See also, Ex parte Richardson, Appeal 2009-003991, p. 11 (BPAI 2009) (Exhibit B) ("The Examiner appears to have arbitrarily set the axis of the cited references with no consideration as to the relationship with other claimed features").

The Applicant mentioned one of these PTAB decisions again, later in the argument section:

Here, as in Ex parte Richardson, the interpretation of the claim by the Examiner is not consistent with the description of the invention in the specification. The Examiner has arbitrarily added annotations consistently of two axes added to the prior art figures with no consideration as to the relationship with the other claimed features. Ex parte Richardson, p.11.

The Examiner's Answer included the same figure with additional annotations, though no further explanation:

Annotated Figure from Examiner's Answer

The Applicant filed a Reply Brief and expanded on the argument, as follows:

The Examiner's Answer completely ignores and flies in the face of the [BPAI] respected authority relied upon in Applicant's Appeal Brief. Ex parte Denison, Appeal 2009-004110, p.5 (BPAI 2010) and Ex parte Richardson, Appeal 2009-003991, p. 11 (BPAI 2009). The Examiner cites no authority for relying upon axes hand drawn by the Examiner on a cited prior art reference to support the assertion that the claims are anticipated ...
The Examiner's Answer is devoid of any support in the prior art for his construction of the claims and so the Examiner just sketches some lines on the prior art drawings and concludes that the claims are anticipated. In conclusion, the Examiner is wrong on the law and wrong to torture the prior art references by arbitrarily sketching lines that are defined only by the Examiner.

The Board affirmed the rejection. The Board essentially dismissed the Applicant's "arbitrary" argument for two reasons. First, the cited PTAB decisions were not precedential. Second, the Applicant did not "provide a persuasive line of reasoning analogizing the facts in those cases with facts in the presently appealed case."

Turning to the merits, the Board found that the Examiner's annotations were not arbitrary. The axes which the Examiner added to the figure served as a system to identify joined segments, with the center point of the punch acting as the center of the coordinate system." The Board found this system of identifying segments to be reasonable. Furthermore, the Board found that the Examiner's findings about how the claims read on the reference were supported by a preponderance of the evidence.

My two cents: Patent prosecutors rely on case law far less than many other types of attorneys. Success in patent prosecution is commonly understood to depend far more on technical distinctions than on purely "legal" arguments. But if you're going to rely on case law for more than simply a basic legal proposition (e..g, the elements of a prima facie case of obviousness), you need to do what we learned in law school.

The Applicant did the first part, which is finding cases relevant to the issue at hand. Both cases involved Examiner annotation
of a reference figure to show claimed geometric features. Then go the extra mile by showing how the facts in the relied-upon case are similar to or different from your facts. If you simply cite to the holding and use some quotes, you're essentially asking the Board to do the analysis for you.

Wednesday, December 16, 2015

Takeaway: Claims to a cleaning solution excluding an oxidizing agent were rejected as obvious in view of a kit of prepackaged components for later mixing with the excluded oxidizer. On appeal, the Applicant argued that any
"solution" prepared from the kit disclosed in the reference necessarily includes
an oxidizing reagent because there was "no suggestion to alter the
essential order of addition of its reagents, which requires mixing the
oxidizing agent and the surfactant as an initial step." After performing claim construction, the Board relied on a different kit, also disclosed in the reference, to find the solution obvious. The Board noted that the Applicant and Durmowicz both contemplate mixing a oxidizing agent solution with another solution that omits the agent, producing a final solution. Thus, Durmowicz's solution [made from the components in the second kit] "reasonably renders the solution of claim 59 obvious when formulated in the first tube that will later be mixed with a second tube containing the nucleic acid deactivating agent." (Ex parte Nelson, PTAB 2015.)

The technology on appeal involved nucleic-acid probes, used to test a biological sample for the presence of particular microorganisms. The claims on appeal were directed to cleaning agents used to avoid contamination during the testing.

A representative claim on appeal recited:

59. A homogeneous solution for
use in preventing nucleic acids from acting as templates in an
amplification reaction when the solution is combined with a nucleic acid
deactivating agent,
the solution consisting essentially of
a corrosion-inhibiting agent, a wetting agent, and a solubilizing agent,
each of the agents remaining substantially in solution at 22°C,
[functional limitations related to agents], wherein the solution does not include a nucleic acid deactivating agent.
(Emphasis added.)

Early in prosecution, the Examiner rejected the claims as anticipated by
Durmowicz, relying on a discussion of agents that are pre-packaged as separate components, then mixed before use. The Applicant disputed the Examiner's reading of Durmowicz and specifically argued
that Durmowicz's kit of prepackaged agents did not include a solubilizer as
claimed:

In sum, [Durmowicz] requires the inclusion and presence of a nucleic acid oxiding agent in all contemplated embodiments (including kits), whether they are intermediate or final embodiments. In other words, at no point (even transiently) does Durmowicz contemplate a solution containing combined starting materials (e.g., surfactant + builders + solvents), but excluding a nucleic acid oxiding agent.

Later in prosecution, the Examiner used Durmowicz in a single-reference § 103 rejection:

Examiner recognizes that the cited art Durmowicz et al. teaches the components of the solution recited in instant claims along with many other choices. Furthermore the cited art does not recite a single composition containing all the recited components in one place, hence an obviousness rejection over the cited art is also being made.
... Durmowicz et al. does not teach a specific composition consisting essentially of the all recited components. It would have been prima facie obvious to one of ordinary skill in the art to make a solution containing [the three agents as claimed] wherein the solution does not include a nucleic acid deactivating agent.

As a rationale for omitting the deactivator, the Examiner relied on the (allegedly) common biochemical practice of preparing one solution with a oxidizer and a separate solution without, and then mixing the two shortly before use, because oxidizing agents become less active in storage. Finally, the Examiner asserted "a reasonable expectation that the resulting
composition where oxidizing agent was freshly added prior to use would
be very effective in deactivating nucleic acid from surfaces."

The Applicant responded by arguing that even Durmowicz's kit of prepackaged agents did not suggest the claimed solution, because Durmowicz required the presence of a nucleic acid deactivating agent in each of its solutions.

When the Examiner maintained the obviousness rejection, the Applicant appealed. The Applicant argued the Examiner had not provided sufficient evidence:

The
Examiner appears to suggest that although Durmowicz fails to teach the
claimed solutions, the Durmowicz teaching to prepare solutions shortly
before use explicitly guides one of skill in the art to the claimed
solutions. [However, this] conclusion is solely the opinion of the
Examiner, with no support in the cited art. For example, no art beyond
the Durmowicz reference is relied upon by the Examiner (1) for the above
proposition, and (2) for the proof of what one of skill in the art was
purported to know or how they would practice at the relevant time.

In addition to this attack on the Examiner's prima facie case, the Applicant also argued on the merits. Specifically, the Applicant reiterated that Durmowicz did not disclose a solution without a deactivating agent:

Thus, contrary to the limitations of the present claims, Durmowicz requires the presence of a nucleic acid deactivating agent in each of its solutions. Stated differently, no homogeneous solutions (i.e., multi-component homogeneous solutions, as required in the pending claims) are taught or suggested by Durmowicz that lack a nucleic acid deactivating agent.
(Emphasis added.)

The Applicant went on to explain the difference between the claimed homogeneous solution and Durmowicz's kit of separate components:

Importantly, these pre-packaged reagents are not identified as, nor are they, "solutions" comprising multiple agents such as the homogenous solutions of the present claims. Rather, para. 52 of Durmowicz discloses separately packaging each reagent of the future "solution" that is to be made. In other words, although Durmowicz discusses separately packaging the "surfactant" agent and the "oxidizing" agent, these individually packaged agents are not the ultimate "solution," as that term is used in the present claims. Moreover, the Durmowicz disclosure provides no suggestion to alter the essential order of addition of its reagents, which requires mixing the oxidizing agent and the surfactant as an initial step. Accordingly, any "solution" prepared according to the Durmowicz kit disclosure includes an oxidizing reagent.

The Applicant next questioned the benefit proffered by the Examiner as a reason to separate the oxidizer from the other components:

Durmowicz, therefore, contemplates prepackaging in order to facilitate dissolution of its ingredients, and not to avoid a purported rapid decrease in activity of solutions containing oxidizing agent. As such, the basis for this proposition of the Examiner is lacking in the cited art.

Finally, the Applicant made an unexpected results argument:

In fact, those of skill in the art would have expected particulate formation if a corrosion­ inhibiting agent, wetting agent, and solubilizing agent were combined in the absence of an oxidizing agent. For example, as indicated in the present specification at para. 16, it was the present inventors who discovered that the components of the claimed solution could be combined in the absence of the nucleic acid deactivating reagent without forming a precipitate or an otherwise non-homogenous solution.

The Examiner's Answer repeated the earlier explanation about how and why a POSITA would take Durmowicz' separate components and mix them together before use to obtain the claimed solution:

Hence in biochemical arts to ensure optimal activity each time the solution containing oxidizing agent is used, one practice is to prepare two separate solutions, a solution (1) containing all the remaining components which is stable for longer period of time and the oxidizing agent is kept separate either as powder or another solution (2) which is freshly reconstituted if powder form is used then the solution (2) is mixed with solution (1) shortly before use.

The Applicant filed a Reply Brief, but it was denied entry because it included amendments to the claims.

The Board affirmed the obviousness rejection. As discussed above, the Brief had argued that each of Durmowicz's agents was separately packaged for later combination into a future solution, and these individually packaged agents were not the ultimate claimed solution. The Board viewed the teachings of Durmowicz differently.

The Board pointed out that Durmowicz taught two kits. One kit included "appropriate amounts of surfactant and oxidizing agent in separate containers for mixing prior to application." Another kit included "surfactant and organic builder salts such as phosphates or bicarbonates in one tube and the oxidizing (i.e. nucleic acid deactivating agent) in another tube." Moreover, the Board found (as a matter of claim construction) that Durmowicz's builder salts corresponded to the claimed "corrosion-inhibiting agents." The Appeal Brief discussed the first kit but not the second.

The Board concluded the properly construed claim was obvious in view of the second kit and a separate teaching about solvents:

[The second kit] solution with surfactant, organic builder salts such as phosphates and bicarbonates (Finding of Fact 7) and optionally organic solvents such as isopropanol (Finding of Fact 11) reasonably renders the solution of claim 59 obvious when formulated in the first tube that will later be mixed with a second tube containing the nucleic acid deactivating agent (FF 6).

The Board dismissed the Appeal Brief discussion of unexpected results (homogeneous solution rather than particulates) because the Applicant did not offer evidence. "Appellants do not identify any teaching in Durmowicz suggesting that the combination of components necessarily results in particulate formation, and indeed, Durmowicz teaches "a non-particulate solution" (see Durmowicz , para. 53).

My two cents: The outcome might have been different if the Applicant had been more proactive and addressed all of Durmowicz's teachings about the kit. It's true the Examiner relied exclusively on general teachings about a kit in para. 52. However paras. 53 and 54 contained more details about first and second kits, respectively, and the Board found that the second kit corresponded to a combination of a corrosion-inhibiting agent, a wetting agent, and a solubilizing agent. The Board found it obvious to combine this later with a deactivator.

I see the Board's affirmance as a new ground of rejection. MPEP 12707 says it's a new ground to "rel[y] on a different portion of a reference which goes beyond the scope
of the portion that was previously relied upon" but not a new ground when "citing a different portion of a reference to elaborate upon that which has been cited previously." Relying on a different kit of reagents is "going beyond previously relied upon" than "elaborating on previously relied upon." So if the Applicant filed a Request for Rehearing asking the PTAB to designate a New Ground of Rejection, the law is on the Applicant's side. (That said, I don't think the Board actually grants many of these Requests, and the Federal Circuit has corrected the Board a number of times in the past few years on the subject of New Grounds.)

The way I see it, designation of a New Ground would still be a pyrrhic victory. A New Ground of Rejection in an appeal decision allows the Applicant to file post-appeal amendments and/or evidence without paying for an RCE. Which means the Applicant still waited on appeal for all those years only to lose because the PTAB decided to go farther than the Examiner did.

It's true that the law requires the Applicant only to show error in the
Examiner's rejection, and not to show patentability over the cited
references. Even so, a more proactive Applicant might have accounted for the two paragraphs following the one relied on by the Examiner. Perhaps that would have led to claim amendments rather than appeal.

Claim construction was also an issue in this case, though neither party appreciated it until too late. The Examiner first addressed claim construction in the Answer, and the Applicant in the Reply Brief – though the Reply wasn't entered because it also contained claim amendments. I'll discuss these claim construction issues in a future post.

Finally, it's worth mentioning that when the Examiner added the § 103 rejection for the first time, he also maintained the anticipation rejection – while at the same time acknowledging that the reference didn't describe a single composition with
all the components "in one place." The Examiner explained anticipation as follows:

[B]efore the contents of the container with oxidizing agent is mixed with the surfactant solution, the solution clearly lacks an oxidizing agent. This is the rationale because of which Examiner concludes Durmowicz et al. does teach a solution that lacks an oxidizing agent.

The Applicant traversed the § 102 rejection on the basis of the Examiner's admission, and the Examiner then withdrew it, before the Applicant appealed.

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